FIRST
AMENDMENT LAW LETTER Winter 2000 - New Media Edition
TECHNOLOGY
SHAPES 21ST CENTURY NEWSGATHERING: Reflections from the Last Millennium
and Its Last Month
By Bruce
E.H. Johnson
Will the Internet change the gathering of news,
and how? How will American institutions, including legal rules governing
the media, be transformed by an interconnected world? As 1999 has
clicked over into 2000, several recent events offer hints of profound
change and remarkable continuity, suggesting ways that the 21st century
media will be affected by new technologies.
This is not a new process. Technology shapes our lives in strange
and unexpected ways, bringing changes that can overwhelm existing
civic and political institutions. In past centuries, transforming
the forms of communication and news led to the transformation or
destruction of competing social systems.
Highlights of the last millennium in the
United States-and in particular the last month of 1999-may offer
some useful guidance about past technologies, how they changed the
newsgathering process and the law, and where new media may be headed.
Printing
Printing and democracy were a combustible mixture. The American
Revolution, for example, was the direct product of the invention
of printing-ignited when 18th century chat-room participants and
letter-writers suddenly decided to share their opinions with the
public. The new technology appropriated the old: the letter, the
dominant form of communication, was transformed into a newsgathering
and opinion-shaping tool1.
From 1763 to 1775, the number of newspapers in the Colonies doubled.
These newspapers were said to be infected by a "nearly epidemic
degree of seditious libel" with "press criticism of government policies
and politicians" raging "contemptuously and scorchingly."2
When riots broke out in Boston in 1765, the Royal Governor, Thomas
Bernard, blamed the Boston Gazette, and accused the newspaper of
"raising that flame in America which has given so much trouble."
Two years later, Lord Grenville tried to persuade Parliament to
censure "certain papers, published at Boston," as "libelous and
treasonable," but was talked out of the effort, because "it was
below the dignity of Parliament to pay any regard to angry newspaper
writers." 3
By 1774 and 1775, royal authority had collapsed in the Colonies
and "new authorities‹committees and congresses‹began putting together
new popular structures of authority from the bottom up."4Legally
speaking, these were informal associations; politically speaking,
they were conspiracies, providing (to adopt the Web analogy) links
to one another's viewpoints. These Committees of Correspondence
communicated with one another; but they also communicated with members
of the public and shaped public opinion. These "correspondents"
were not just letter writers; they also helped create news and became,
in effect, newspaper correspondents. Some also promoted revolution.
As with today's Internet, the latest technology made this revolution
a worldwide event. For example, in April 1775, the Massachusetts
Committee of Safety learned that the British Army General Thomas
Gage was preparing an official report on the battles of Lexington
and Concord, collected 100 depositions and letters from battle participants,
and enlisted the owner and sailing master of a fast American schooner
to transmit their evidence to London readers. Speed worked in their
favor‹as did the British commander's view that information should
be entrusted to "others in proportion to their rank." Although the
American ship had left Boston four days after General Gage's, its
accounts reached the London press two weeks before Gage's and immediately
shaped English public opinion in the Americans' favor.5
Another well-known example was Thomas Paine's influential Common
Sense, one of 400 pamphlets produced by American printers in 1776.
Paine originally had intended a series of letters but instead decided
to write an anonymous pamphlet ridiculing monarchy and advocating
American independence. It was published in Philadelphia in January
1776. Several printers immediately battled for the copyright, and
unauthorized editions began pouring from colonial printing presses.
One month later, a German translation appeared in Pennsylvania and
Common Sense was published in New York. By April, a Boston edition
appeared and Paine estimated that 120,000 copies had been published.
Editions soon appeared in Salem, Newport, Hartford, Lancaster, Newburyport,
Norwich, Albany, and Providence. By May, Common Sense was circulating
in Quebec and Warsaw's Gazeta Warszawska was publishing excerpts.
Later that year, editions appeared in London, Edinburgh, and Newcastle;
a French translation was published in Rotterdam.6
Telegraphs, railroads, and telephones
Two 19th century innovations, the railroad and the telegraph, led
to such varied results as the demise of the British aristocracy,
the rise of Impressionism, the settlement of the American West,
the creation of a global stock market, the abolition of slavery,
and the replacement of local time by an international girdle of
time zones.7
In the United States, the private press expanded its powers as it
exploited new technologies. Through these technological shifts,
newsgathering moved from individual to association and to corporate
consolidation, which empowered an extensive system of private media
that challenged serious governmental controls. The invention of
the telegraph coincided with an era of American law that reflected
the "release" of private entrepreneurial "energy."8
New technology immediately broke down barriers of time and distance,
states simplified their incorporation procedures to allow more businesses
to take new risks without undue liability burdens, and, as the "penny
press" expanded the reading public, these technological and legal
changes drove a new profit motive: "Increasingly, news was worth
money."9Financier
James Rothschild‹whose family fortune was based on exclusive control
of access to financial information‹complained that, with the telegraph,
"anyone can get the news."10
The telegraph was efficient for delivering news to newspaper offices,
but it was not suitable for distributing news directly to readers.
Thus, newspapers immediately utilized the new modes of communication
by associating with other newspapers across the United States. Because
speed was important, the press no longer relied on the efforts of
individual correspondents writing sporadic letters from distant
cities. The Associated Press, one of these "news agencies," established
"cozy relationships with the telegraph companies and was soon able
to dominate the business of selling news to newspapers."11Among
AP members, news stories were shared‹much like current Web links.
The French observer Alexis de Tocqueville,
when he visited America in 1831, remarked on the "spirit of association"
and how "that freedom of association favors the welfare and even
the tranquillity of the citizens."12
De Tocqueville also saw a powerful press, capable of resisting governmental
power. The "hallmark of the American journalist," he noted, "is
a direct and coarse attack, without any subtleties, on the passions
of his readers; he disregards principles to seize on people, following
them into their private lives and laying bare their weaknesses and
their vices." Yet, nothing was "rarer than to see judicial proceedings
taken against" the media, because Americans believed the people,
not the government, were sovereign and that courts were "powerless"
against the press.13
After the Civil War, the explosion of investment in railroads (financed,
ironically, by government grants) led to the Gilded Age and to the
consolidation of vast corporate structures, as private capital became
newly energized and powerful, dwarfing existing governmental institutions.14
Such consolidation was typical, as well, within the telegraph industry;
by 1880, one company (Western Union) handled 80 percent of America's
message traffic.15
Meanwhile, courts creatively applied and
adapted the Constitution and the common law to encourage use of
the new technologies, allowing the spread of wires without unnecessary
legal risks. Because railroads and telegraphs operated in interstate
commerce, the United States Supreme Court prevented states from
regulating them.16
Recognizing that immunity to transmit libelous messages "must be
broad enough" to enable the telegraph company to render its public
service efficiently and with dispatch, and "that speed is the essence
of the service,"17
federal and state courts also devised new common law privileges
to avoid hamstringing the new technologies with libel judgments.
The courts even extended this conduit immunity to the newspapers'
news associations‹developing the so-called "wire service" defense18,
which created the doctrinal base for the New York Times v. Sullivan
"actual malice" rule.
Adapting to these new technologies, the
American media also consolidated, with Hearst, Pulitzer, and other
chains dominating national discourse and retaining reporters as
corporate employees (a relationship typified by Hearst's classic
telegram to artist Frederic Remington‹"You furnish the pictures
and I'll furnish the war.")19
Yellow journalism was powerful enough to press the buttons of government;
when America jumped into war with Spain in 1898, it was "the Journal's
war."20 Meanwhile,
laissez faire government became somewhat irrelevant to the new media
empires, requiring few court decisions on press rights and producing
the so-called "forgotten years" for freedoms of speech and press.21
Indeed, the 19th century "produced some important issues for individual
civil liberties, but showed no impressive record of grappling with
them." 22
Radio, television, and cable
Government firmly took control of two 20th
century news technologies, radio and television. Interestingly,
the broadcast regulatory system, a product of the Progressive Era,
was in fact an accident‹the consequence of a stray iceberg in North
Atlantic shipping lanes.
Between 1906 and 1912, America experienced
its first radio boom. As with today's Internet, the broadcast spectrum
was largely unregulated and controlled by amateurs. Hundreds of
"schoolboys" across the United States built radio sets and sent
messages to one another. These amateurs behaved like "kids"‹indeed,
some amateurs "deliberately sent false or obscene messages, especially
to the navy," which began mounting a campaign (largely unsuccessful,
at first) to curb their activities. 23
In April 1912, the Titanic sank, accompanied
by "ceaseless interference, cruel rumors, and misleading messages
that filled the air from unknown sources during the disaster."24
The press unanimously denounced radio amateurs after the Titanic
disaster "for interfering with Œlegitimate' message handling. What
caused the amateurs to lose their freedom to roam the ether at will
was not so much that the government would no longer tolerate that
freedom, but that a very influential business, the press, found
their activities a disruptive encroachment on its turf."25
The disaster led to a public demand for increased government regulation
of the wireless spectrum. As a result of the Titanic, "the United
States government seized control of the airwaves."26
The Radio Act of 1912 began federal control
of the American radio spectrum. Later, prodded by Secretary of Commerce
Herbert Hoover, Congress enacted the Radio Act of 1927 which expressly
rejected any private ownership of the airwaves, developed an emphasis
on the "broadcast" rather than point-to-point format, and adopted
a public utility model for license allocation and distribution.
This licensing model meant the removal of
minority viewpoints from broadcasting in favor of the "general publicŠinterest."
Thus, the Federal Radio Commission, created by the 1927 law, immediately
attacked "propaganda stations," warned a New York Socialist station
that it must "operate with due regard for the opinions of others,"
announced that there was no "room in the broadcast band for every
school of thoughtŠ each to have its separate broadcasting stations,
its mouth-piece in the ether," and removed the licenses of KGEF
in Los Angeles because of the "sensational" attacks on public officials
and corruption by "Fighting Bob" Shuler, and of KFKB in Kansas City
because of the efforts by the "goat-gland doctor," John R. Brinkley,
to promote his peculiar theories of rejuvenating middle-aged male
sexuality.27
The Communications Act of 1934, with its
emphasis on administrative expertise, continued this trend. By that
time, the dominant European-based political ideologies‹including
Fascism, Socialism, and Communism, together with the American New
Deal‹were premised on theories of major government control over
the private market. Moreover, in contrast to the legal system that
had shaped the news media's use of 19th century technologies and
encouraged association and consolidation, broadcast licensees' efforts
to associate and combine were subject to strict government controls.
While none of the federal regulatory statutes had expressly dealt
with broadcast networks, the Federal Communications Commission extended
its controls over networks with its "chain broadcasting rules,"
and was upheld by the Supreme Court in 1943. 28
These regulations, which imposed major barriers
to entry, nurtured large media broadcast entities that were subject
to significant federal controls and protections. By the 1960s, an
American industrial structure built on large companies such as the
Big Three automakers was mirrored by a media system comprised of
three large television networks. These national broadcast networks
were devoted to a large public, providing undifferentiated national
news to everyone.
In 1964, in a case involving a major national
newspaper, the United States Supreme Court granted the news media
major First Amendment protection against local governmental authorities
that had sought to use state libel laws to stop coverage of civil
rights protests that undermined Southern élites.29
But, for broadcasters, the federal licensing system devised in the
Titanic's wake brought a noteworthy erosion of First Amendment rights.
Based on the rationale that the broadcast spectrum was a uniquely
scarce public resource (a theory that has been severely criticized)30,
government regulations, such as right-of-reply requirements31
and content controls32
were routinely upheld by the federal courts. Frequently, the major
networks found themselves battling directly with United States senators
or the Executive Branch‹ for example, Edward R. Murrow and Senator
McCarthy‹to defend First Amendment values. By the 1970's, the government's
control of this licensing structure was the springboard for the
Nixon Administration's "assault on the networks,"33
a campaign that was finally aborted by Watergate.
In recent years, telecasting has moved beyond
broadcast technology. With the development of cable news systems‹neither
dependent on broadcast licenses nor entangled with a "scarcity"
theory mandating government involvement‹the courts have allowed
more First Amendment protections for television. For example, they
developed a doctrine called "intermediate scrutiny" that permits
cable news companies to escape some (but not all) of the limitations
of the federal television licensing system and allows fewer content
controls than regular broadcasting.34
For the electronic media, however, use of new technology has been
accompanied by new liabilities, as some courts have begun expanding
privacy definitions and penalizing routine electronic newsgathering
techniques. 35
Internet trends
Web news certainly has broken with the broadcast
news model launched at the beginning of the 20th century with the
sinking of the Titanic. This is because, despite Vice-President
Gore's recent claims of paternity36,
the Internet is really the libertarian child of Reaganism and Thatcherism.
Proponents of greater government involvement and control over the
Web, such as Harvard's Lawrence Lessig37,
are thus the exception rather than the rule. In Reno v. ACLU,38
the Supreme Court decisively rejected a broadcasting analogy and
endorsed the conclusion that the Internet, as "the most participatory
form of mass speech ever developed," is entitled to "the highest
protection from government intrusion."
With its libertarian impetus intact after
Reno v. ACLU, Net newsgathering has returned American media to its
Revolutionary roots, with everyone in the world a potential correspondent.
One of the most stunning demonstrations of this new medium occurred
from November 30 to December 3, 1999, when the World Trade Organization's
ministerial conference met in Seattle. The WTO meeting was overshadowed
by (in the words of local news anchor Jean Enersen) "the first post-modern
riot, the first riot to be organized on the Internet," with thousands
of anti-trade protesters demonstrating against the WTO, blocking
and attacking WTO delegates, and vandalizing downtown Seattle. In
the following days, joined by the National Guard, the Seattle police
switched tactics, took control of a major section of the city center,
and began arresting and battling demonstrators and local civilians.
Anti-WTO activists dissatisfied with coverage
of trade issues by "the mainstream press" organized the Seattle
Independent Media Center, rented a storefront location near the
epicenter of the riots and protests, persuaded local technology
firms to donate equipment and services, and created a news website
(www.indymedia.org) devoted exclusively to anti-WTO information
and activities.
During the WTO meeting and the accompanying
protests and riots, the Independent Media Center encouraged members
of the public opposed to free trade policies (even the Buchanan
for President campaign) to post their own information and commentary
on their website without prior editorial intervention or scrutiny.
During the disturbances, protesters brought film to the Center for
immediate processing and posting on the Web. The Indymedia website
also invited contributors to "[p]ublish your text article, audio
segment, video footage, or picture" by clicking and transmitting
this information for immediate uploading to the Web. Thus, viewers
across the world could click on the page and see current photographs
of altercations between Seattle police and protesters and receive
live streaming video and audio.
Facilitating this democratic viewpoint of
Web journalism is a growing body of case law that firmly rejects
defamation and privacy liability by third parties such as websites
and Internet service providers. Courts have recognized that, to
facilitate freedom of speech, the Internet must be shielded from
major liabilities. Thus, like their 19th century predecessors who
nursed the growth of telegraphy, some courts have protected the
Internet as an organ of interstate and international commerce and
have refused state regulatory schemes.39
Also, beginning with Zeran v. AOL40
in 1997, courts have consistently applied Section 230 of the Communications
Decency Act41
in dismissing defamation and similar state law claims against ISP's
and others.
On December 2, 1999, while police and anti-trade
demonstrators were fighting in Seattle, the New York Court of Appeals
extended the Zeran principle when it refused to hold Prodigy Services
Company liable for negligence or defamation resulting from some
vulgar email messages and bulletin board postings by an unknown
imposter using the plaintiff's name.42
Citing telegraph and telephone legal cases, the court rejected such
liability as a matter of common law doctrine and extended to this
Internet "conduit" the same "common-law qualified privilege accorded
to telephone and telegraph companies." Like its predecessors grappling
with the "wire service" defense, the New York court freely admitted
that its choice was motivated by public policy‹its view that the
"public would not be well served by compelling an ISP to examine
and screen millions of e-mail communications, on pain of liability
for defamation."
But the legal battles between government
and the media, which typified much of 20th century press law, are
not over. With the rise of the Internet, it appears that "privacy"
is the newest argument against press freedom. On December 14, 1999,
the Committee on Financial Disclosure of the Judicial Conference
of the United States refused the request of an internet news service,
APBNews.com43,
for a copy of certain public records that listed the 1998 financial
disclosures by members of the federal judiciary. The Committee was
opposed to APBNews.com's request because it intended to post the
financial data on its website so that individual readers could make
use of the information. These same documents had been routinely
released to reporters in the past, resulting in major news articles
about the judges' conflicts of interest that were published in the
Kansas City Star and the Washington Post.
Aided by a temporary restraining order that
was quickly issued by a Florida federal judge a few days earlier,
the Committee ruled that these public records were not public records
as far as the Internet is concerned and decided to change the rules
because they feared real publicity‹i.e., ready accessibility online.
To justify its decision, the Committee adopted what a Washington
Post editorial characterized as a "laughable" interpretation of
the Ethics in Government Act and ruled that they must be kept from
Internet users. Simultaneously, the Committee permitted other media
to obtain the same financial records.
The Committee's decision to brand the Web
taboo, of course, illegally discriminates against one form of journalism
in favor of others. More tellingly, it also illustrates a familiar
attitude that has surfaced repeatedly during the last millennium
of American history‹the distrust of democracy‹and recalls British
General Gage's policy to share useful information with "others in
proportion to their rank."
On December 22, 1999, as the 1900's drew
to a close, APBNews.com filed suit in federal court in New York
City. "This is a fight to gain access to public records for all
Internet users," said Mark Sauter, chief operating officer of APB
Online Inc., the parent company of APBnews.com. "The Internet is
not just a legitimate but a superior means to disseminate these
documents to the public."
Bruce E.H. Johnson, a partner in DWT's
Seattle office, has represented clients in many major First Amendment
and defamation cases and has published numerous articles. He is
regularly listed among Woodward/White's Best First Amendment Lawyers
in America and is listed in Who's Who in America. He also advises
on issues of legal ethics and lawyer liability.
CYBERSQUATTING
OR CYBERSPEECH? First Amendment Issues in the New Anticybersquatting
Act
By Marshall
J. Nelson
On November 29, 1999, the Anticybersquatting
Consumer Protection Act1
1 was signed into law, amending Section 43 the federal Trademark
Act, 15 U.S.C. § 1125, to create a new cause of action for trademark
owners against registration of their trademarks as Internet domain
names by others. Almost immediately, the NFL, NBA, NHL, and Major
League Baseball announced that they were filing suit against the
holders of such domain names as nfltoday.com, rangers1.com, goredwings1.net
and yankees1.com, warning that "this will be the first of many lawsuits."
The Anticybersquatting Act has been touted
as a powerful new tool against pirates who traffic in domain names
built on others' trademarks, either holding them for extortionate
resale, or using them to divert Internet traffic from the legitimate
owner. Prior attempts to attack the problem in trademark infringement
and dilution suits, although often successful, also ran into conceptual
problems under traditional trademark analysis: Was the mere holding
of a domain name a "use in commerce"? Did the momentary link to
the wrong website rise to the "likelihood of confusion" necessary
to prove infringement? Did domain name use of a trademark really
dilute the distinctive quality of a "famous mark," and was the mark
really famous? The Act addressed these problems by creating a separate
cause of action where the domain name holder simply "has a bad faith
intent to profit from [use of another's] mark."2
The concept of bad faith was not in the
original Anticybersquatting Bill, S. 1255. It, and the list of factors
for determining bad faith, were added in part in response to another
theme that was emerging from domain name cases in the courts‹the
fact that use of a trademark in a domain name might have a communicative
function and might constitute a form of protected speech. In the
words of Senator Hatch, addressing the substitute bill S. 1461:
"the bill balances the property interests of trademark owners with
the interests of Internet users who would make fair use of others'
marks or otherwise engage in protected speech online."3
The concept of a domain name, a mere Internet
address, as protected speech seems counterintuitive at first. Indeed,
the court in Planned Parenthood Federation of America Inc. v. Bucci,
No. 97 Civ. 0629, 42 U.S.P.Q.2d 1430, 1997 WL 133313 (S.D.N.Y. Mar.
19, 1997) rejected such an argument by the defendant seeking to
justify his use of plannedparenthood.com to identify his anti-abortion
website. The court held that because "defendant's use of the trademarked
term Œplanned parenthood' is not part of a communicative message,
but rather, serves to identify a product or item," his infringement
on the plaintiff's mark was not protected by the First Amendment.
42 U.S.P.Q.2d at 1440-41.
But other courts recognized that a domain
name might carry a communicative message. In Lockheed Martin Corp.
v. Network Solutions, Inc., 985 F. Supp. 949, 964 n.9 (C.D. Cal.
1997) (citing American Civil Liberties Union of Georgia v. Miller,
977 F.Supp. 1228, 1233-34 (N.D.Ga. 1997)), the court noted that
"Internet users may also have a free speech interest in non-infringing
uses of domain names that are similar or identical to trademarks."
In Bally Total Fitness Holding Corp. v. Faber, 29 F.Supp.2d 1161,
1165 (C.D. Cal. 1998), which involved the defendant's use of "Bally
sucks" as the title of his web page, the court noted that Faber
was not using the Bally name in his domain name, but stated, "even
if Faber did use the mark as part of a larger domain name, such
as Œballysucks.com,' this would not necessarily be a violation as
a matter of law." The court went on to note that "[a]n individual
who wishes to engage in consumer commentary must have the full range
of marks that the trademark owner has to identify the trademark
owner as the object of the criticism," and "[a]pplying Bally's argument
would extend trademark protection to eclipse First Amendment rights."
Id. at 1165 n.4, 1166.
Most recently, in Name.Space, Inc. v. Network
Solutions, Inc., No. 99-6080, 2000 WL 48668, at *10 (2d Cir., Jan.
21, 2000), the Second Circuit addressed the issue head-on. Although
it affirmed the district court's finding that three letter top level
domains (.com, .net, .org) were not expressive speech, the court
went on to address at length the circumstances under which domain
names might well be entitled to First Amendment protection, and
concluded, among other things:
[T]he functionality of domain names does
not automatically place them beyond the reach of the First Amendment.
Although domain names do have a functional purpose, whether the
mix of functionality and expression is "sufficiently imbued with
the elements of communication" depends on the domain name in question,
the intentions of the registrant, the contents of the website,
and the technical protocols that govern the DNS. Spence v. Washington,
418 U.S. 405, 409-10 (1974) ("[T]he context in which a symbol
is used for purposes of expression is important, for the context
may give meaning to the symbol." (citation omitted)).
The court also noted in passing that the
district court in Planned Parenthood had applied exactly this kind
of analysis in concluding properly that the defendant's appropriation
of plannedparenthood.com was not protected.
These factors are carried forward in the
Anticybersquatting Act. In determining whether adoption of a domain
name incorporating another's trademark bears the requisite bad faith
intent, the Act lists among the nine factors to be considered, "the
person's bona fide noncommercial or fair use of the mark in a site
accessible under the domain name," and concludes that bad faith
shall not be found "in any case in which the court determines that
the person believed and had reasonable grounds to believe that the
use of the domain name was a fair use or otherwise lawful."4
Lest there be any confusion as to the intent
of these sections, the legislative history includes the following
explanation:
[U]nder paragraph (1)(B)(iv), a court
may consider the person's legitimate non-commercial or fair use
of the mark in a web site that is accessible under the domain
name at issue. This factor is intended to balance the interests
of trademark owners with the interests of those who would make
lawful noncommercial or fair uses of others' marks online, such
as in comparative advertising, comment, criticism, parody, news
reporting, etc. The fact that a person may use a mark in a site
in such a lawful manner may be an indication that the person's
registration or use of the domain name lacked the required element
of bad-faith. 5
The Act also closes with a savings clause,
Section 3008, which states expressly, "Nothing in this title shall
affectŠa person's right of free speech or expression under the first
amendment of the United States Constitution."
An obvious purpose of these provisions is
to protect dissent and protest websites that need to identify their
subject matter online. Senator Leahy noted in his criticism of the
original S. 1255, "While the speech contained on those [protest]
sites is clearly constitutionally protected, S. 1255 would criminalize[]
the use of the trademarked name to reach the site and make them
difficult to search for and find online."6
The new Section 1125(d)(1)(B)(iv) addresses this problem. But what
about the opposite kind of site-the "fan site" that, far from protesting,
proclaims the domain name owner's enthusiasm for or allegiance to
an entertainer or sports team?
According to press announcements, the domain
names7 on
professional sports' hit list include those that incorporate team
names: rangers1.com, goredwings1.net and yankees1.com., for example.
If it turns out that these are simply being warehoused for resale
to the proper trademark owners, the remedies of the Act should probably
apply. On the other hand, prior to passage of the Act a number of
collegiate sports fan sites‹clearly devoted to news, information
and commentary about sports teams‹received traditional cease-and-desist
letters from colleges objecting to use of team names and nicknames,
even names of the institutions, in their domain names. Properly
applied, both the Act and traditional trademark law should provide
protection for these communicative uses as well.
The right to make nominative or communicative
use of trademarks is well established outside the Internet context.
In New Kids on the Block v. News America Publishing, Inc., 971 F.2d
302 (9th Cir. 1992) the court noted that trademark protection "does
not extend to rendering newspaper articles, conversations, polls
and comparative advertising impossibleŠ[T]he trademark laws do not
give the New Kids the right to channel their fans' enthusiasm (and
dollars) only into items licensed or authorized by them." Id. at
308-09; see also International Order of Job's Daughters v. Lindeburg
& Co., 633 F.2d 912, 918 (9th Cir. 1980) ("Œ[O]ne can capitalize
on a market or fad created by another provided that it is not accomplished
by confusing the public into mistakenly purchasing the product in
the belief that the product is the product of the competitor.'")
(quoting American Footwear Corp. v. General Footwear Co., 609 F.2d
655, 662 (2d Cir. 1979)).
In New Kids, Judge Kozinski specifically
described the use of a sports team's trademarked name as a protected
use:
For example, one might refer to "the two-time
world champions" or "the professional basketball team from Chicago,"
but it's far simpler (and more likely to be understood) to refer
to the Chicago Bulls. In such cases, use of the trademark does
not imply sponsorship or endorsement of the product because the
mark is used only to describe the thing, rather than to identify
its source.
971 F.2d at 306. Where the trademark is
used to identify the subject matter of news and commentary on a
website, the communicative function should be even clearer.
The Anticybersquatting Act recognizes this
principle, expressly in its legislative history noted above8
("a court may consider the person's legitimate non-commercial or
fair use of the mark in a web site that is accessible under the
domain name at issue" in determining good or bad faith) and implicitly
in its recognition of the communicative function of domain names.
Without such protection, as one witness noted, the Act would "make
every fan a criminal."9
The Anticybersquatting Act is only a few
months old, and the full extent of its application remains to be
seen.10 However,
with such clear legislative history and the concurrent benefit of
Judge Katzmann's thoughtful analysis in Name.Space, Inc. v. NSI,
supra, there is hope that the Act will, as predicted by Congress,
strike the proper balance between the rights of trademark owners
and those who would use those trademarks to identify online "comment,
criticism, parody, news reporting, etc." and will in fact "not affect
traditional trademark defenses, such as fair use, or a person's
first amendment rights."11
Marshall J. Nelson, also a partner in
DWT's Seattle office, is a senior member and founder of the firm's
Communications, Media and Information Technologies Department, where
his practice emphasizes First Amendment, mass media, entertainment
and advertising-related intellectual property matters. He is the
author of numerous articles, papers and briefs on intellectual property
and First Amendment issues and is a frequent speaker on the subject.
He is also listed in Best Lawyers in America in both categories.
Private
Censorship, Public Fora and Chat Rooms
By Kraig
Baker
and Tom Burke
The Internet has provided opportunities
unlike any other for geographically diverse people to come together
and have open and honest discussions about matters of public interest.
In fact, the notion that the Internet is widely participatory, facilitates
communications from underrepresented groups and creates relative
parity among its users was a crucial basis for the Supreme Court's
invalidation of the Communications Decency Act.1
Most of the fora where people come together to discuss issues on
the Internet‹chat rooms, bulletin boards, etc. (collectively "chat
rooms"), are, however, like shopping malls, newspapers, and cable
systems‹privately owned. This conjunction of privately owned fora
with the Internet's tradition of unfettered free speech has created
tensions between users and operators of the chat rooms. On the one
hand, users argue that they should have the same free speech rights
on the information superhighway that they have on the streets and
sidewalks of their hometown. On the other, the operators of these
chat rooms feel they should have the same rights as a private property
or media owner to exclude speech with which they disagree.
Traditionally, most operators of chat rooms
censored chat room speech only where they received complaints that
certain speech was potentially defamatory or obscene. However, on
October 15, 1999, Yahoo!, the most popular website on the Internet,
announced that it would begin censoring controversial material from
its chat rooms and bulletin boards. Yahoo! plans to censor these
messages even though the truthfulness of the messages was not in
dispute and despite the fact that there were no complaints from
third parties. A Yahoo! spokesman justified the decision by stating
that "Yahoo! has to be careful because what we publish can influence
a lot of people's lives."2
Yahoo! is not alone in restricting third party material in its chat
rooms. There is tremendous public and political pressure on operators
of chat rooms to shield children from controversial material and
to prevent the disclosure of confidential financial information
or fraudulent statements that could affect a company's stock price.
These pressures have forced operators of chat rooms independently
to monitor and censor content.
Despite the fact that traditional First
Amendment jurisprudence provides almost blanket protection for private
parties to control speech on their private property and despite
Section 230 of the 1996 Telecommunications Act's3
shield of operators of chat rooms and websites from liability for
the acts and statements of third parties, until the Supreme Court
or a significant number of lower courts makes a definitive statement
on this issue, it may be inevitable that operators of chat rooms
will be subjected to creative lawsuits alleging that the operator's
exclusion of certain speech violates the user's First Amendment
rights4.
The questions raised in any such lawsuit would be (1) whether this
private control and exclusion of third party speech in chat rooms
implicates the First Amendment; and (2) how will creative plaintiffs
use the First Amendment to attempt to subject an operator of chat
rooms to limitations on the type of speech it can exclude and how
it may be excluded.
Private Censorship
It is well established that there are very
few situations in which private conduct can be attributed to the
state and scrutinized under the First Amendment.5
A private actor may be subject to First Amendment scrutiny only
where a private forum provides a "public function" undeniably governmental
in nature (e.g., a company town) or where the speech takes place
in a medium not open to all (e.g., cable television). As a result,
an operator of a website or chat room likely only could be subject
to First Amendment limitations where it is providing a "public function"
or where the Internet can be demonstrated to be a medium that is
not open to all.
The "Public Function" Doctrine: The Shopping
Center Analogy
The Supreme Court has sharply limited the
scope and application of the "public function" doctrine. The Court
has held that private individuals or groups are subject to constitutional
limitations and become agencies or instrumentalities of the State
only where they "are endowed by the State with powers or functions
governmental in nature."6
These "powers or functions," however, must be in areas that are
undeniably governmental in nature‹such as supervising voting or
enforcing the law‹not in areas where the entity is merely providing
a function that competes with a traditional governmental area. The
classic example of a private entity that has many public attributes,
but is not an agency or instrumentality of the state, is the shopping
mall.
The Internet is more analogous to a shopping
mall than to the "company town" that does fall within the "public
function" doctrine. Like most chat rooms and websites on the Internet,
the shopping mall has many public attributes, but is privately owned.
Moreover, both are open to the public, both provide common areas
for people to interact, and both provide opportunities for effective
public demonstrations or airing of political views. However, unlike
a company town, neither shopping malls nor the Internet have all
of the characteristics of any other American town.7
Courts have generally held that shopping malls do not have powers
or functions that are governmental in nature merely by virtue of
being large or clustered and, therefore, mall operations are not
subject to constitutional restrictions.8
Considering the similarities of a Yahoo! chat room to the common
area of a shopping center and the fact that courts have been particularly
sensitive to expanding the "public function" doctrine, it is unlikely
that a court will expand the "public function" doctrine to chat
rooms on the Internet. Therefore, any argument that the operator
of a chat room should be treated as a state actor and subject to
First Amendment limitations based on an analogy to a shopping mall
probably will fail.
Nevertheless, providing avenues for public
discourse is an important governmental role. Unlike shopping malls,
one of the Internet's core functions is to provide a forum for people
to debate issues of public concern. Further, the Internet provides
a unique forum to connect geographically diverse people and, therefore,
offers a more compelling argument for access than the mere shopping
mall and, as such, treads on more constitutionally complex terrain.
As a result, courts may consider an alternative framework to analyze
private restraints on chat room speech. One possibility is the cable
system analogy. Limited Access to the Medium: The Cable System Analogy
Courts also have placed limits on the rights of private owners to
exclude or censor third party speech on cable systems or other areas
where access to the medium is limited. The Supreme Court has held
that "there is no sanctuary for the First Amendment for unlimited
private censorship in a medium not open to all."9
The key question then becomes whether the Internet is a medium "open
to all" or is limited and, therefore, subject to the same First
Amendment scrutiny faced by broadcasters.
The leading case on subjecting private fora
to First Amendment scrutiny is Denver Area Educational Telecommunications
Consortium, Inc. v. FCC ("Denver Area").10
In this case, the Supreme Court upheld a law that permits cable
system operators to prohibit "patently offensive" programming transmitted
over "leased channels."11
The plurality opinion specifically rejected the position that it
"must ignore the expressive interestsŠaltogether" of the private
forum providers12.
As such, the expressive interest of Yahoo! or the equivalent likely
cannot be dismissed when determining whether a chat room should
be subject to public forum doctrines. Denver Area would seem to
permit Yahoo! or any other operator of a chatroom or website to
control or exclude the opinions of third parties.
Denver Area, however, also recognized that
the speech rights of a forum owner are not the exclusive consideration,
particularly where the forum owners have not historically exercised
editorial control over the content.13
In essence, the Court held that if an entity or industry has not
traditionally controlled the content of a forum‹for example, the
content of leased channels on a cable system‹the selective or sudden
exercise of such editorial control receives less constitutional
protection than if the entity or industry had been exercising its
editorial control all along. This holding suggests that to the extent
that chat rooms have been left unsupervised for free and open debate,
a court may give the free speech rights of the website operator
less weight than in the context of a website in which content historically
was monitored or controlled.
In Denver Area, the Court also defined what
constituted a public forum more flexibly than it traditionally had.
Specifically, the Court held that the "public nature" of a cable
channel was an important factor for determining a government's interest
and whether the Cable Act passed the strict scrutiny test.14
Specifically, the Court held that "access channels, even if analogous
to ordinary public fora from the standpoint of the programmer, must
also be considered from the standpoint of the viewer. An access
channel is not a forum confined to a discrete public space."15
The Internet possesses a similar "public nature" as a cable channel
and likely will be subject to similar public forum analysis.
Ultimately, though, evaluating whether a
right of public access and free speech for a forum user is consistent
with the First Amendment rights of the forum owner will be inextricably
fact-bound. The Supreme Court has long addressed cases it recognized
as implicating free speech rights in purely private disputes, where
the government's only role was to play referee. How the Court perceives
the free speech rights of the forum owner and forum user varies
with the medium of communication. For example, a right of access
to the private media was upheld in the broadcast context16
and rejected in the newspaper context.17
Most recently, the Court rejected a special interest group's claim
of access to a privately organized parade.18
Each of these cases involved private parties who asserted speech
rights at the expense of other private parties, not the government.
It is unclear where a court will draw the line with respect to fora
on the Internet.
Users of chat rooms and websites will likely
be entitled to some First Amendment protection from the acts of
the forum owners if they can prove that the Internet is "not open
to all." This determination will undoubtedly be fact driven and
the outcome is unclear. On the one hand, speech on the Internet
is more open to public participation than speech in other media,
especially the broadcast channels in Denver Area. Moreover, it is
much easier to own an operate a website than it is to own and operate
a broadcast channel or cable system.
Nevertheless, the increasing domination
of commercial providers continues to bring the Internet closer to
the limited access models of traditional media. Furthermore, plaintiffs
may argue that the costs and technological sophistication associated
with creating, operating and maintaining a website are still so
significant that they serve as an significant obstacle to exercising
one's right to free speech. It is entirely possible that a court
may view keeping chat rooms and other public fora on the Internet
free from private censorship as necessary to permit speakers of
limited means or technological sophistication to exercise their
free speech rights. Conclusion It is unclear how courts will proceed
to determine an individual's access and free speech rights in a
privately owned and operated chat room. In the short term, there
are few risks to website operators for monitoring and excluding
third party content from their chat rooms and websites. It seems
most likely that a court would view the Internet as a medium open
to all and analyze a plaintiff's claims using the shopping mall
analogy, and, as a result, provide blanket protection for the actions
of the web site owner. In the long term, however, the commercial
consolidation of various Internet fora , the continued expansion
of the Internet's role in society, and the potential exhaustion
of certain Internet resources (for example, the supply of IP addresses
for new websites), may make the Internet a limited resource and
subject owners and operators of websites and chat rooms to a hybrid
status similar to that currently experienced by cable system operators.
Kraig Baker, an associate in Seattle
and co-chair of the Internet and E-Commerce Practice Group, represents
all types of companies in their on-line activities. Mr. Baker has
participated in over 100 Internet contracts on behalf of large Internet
companies, smaller start-ups, and existing businesses moving online.
These contracts include content licenses, software licenses, advertising
and joint marketing agreements, and web hosting agreements. These
agreements have involved industry leaders. Mr. Baker has also negotiated
Internet agreements in Russia, India, Australia, Turkey, and Europe.
He also regularly advises Internet clients on privacy, copyright,
defamation liability, and First Amendment issues, including website
reviews and prepublication review of articles and materials published
on-line.
Thomas R. Burke, a partner in the San
Francisco office of Davis Wright Tremaine, represents authors, journalists,
publishers, broadcasters and Web site operators in libel, invasion
of privacy and other content-related lawsuits. Mr. Burke regularly
conducts "web site legal reviews" and counsels traditional and start-up
companies on content liability issues. He regularly provides pre-publication
counseling and is experienced in all aspects of the law relating
to newsgathering including defamation, privacy, shield laws and
gaining access to public records and government proceedings. Mr.
Burke has served as a Legal Advisor to the California First Amendment
Coalition since 1990.
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